USPTO Patents Application 09870801

Exhibit 1

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KEKER & VAN NEST, LLP .
JOHN W. KEKER - #49092
MICHAEL H. PAGE - #154913
710 Sansome Street
San Francisco, CA 94l 1 1-1 704
Telephone: (415)391-5400
Facsimile: "(415) 397-7188 -

INTERTRUST TECHNOLOGIES CORPORATION

DOUGLAS K. DERWIN - #1 1 1407

JEFFEJIY j. McDOW - #1 84727

4800 Patrick Heniy Drive

Santa Clara, CA 95054

Telephone: (408)855-0100

Facsimile: (408) 855-0144

PENNIE & EDMONDS LLP
MICHAEL J. LYONS - #202284
300 Hillview A.venue
Palo Alto, CA 94304
Telephone: (650)493-4935
Facsimile: (650) 493-5556

Attorneys for Plaintiff and Counter-Defendant
INTERTRUST TECP^OLOGIES CORPORATION

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFOR>nA

Case No. C 01-1640 SBA (MEJ)

Consolidated with C 02-0647 SBA

INTERTRUST'S DISCLOSURES OF
ASSERTED CLAIMS AND
PRELIMINARY INFRINGEMENT
CONTENTIONS PURSUANT TO
PATENT LOCAL RULES 3-1 and 3-2

(♦683, '193, '861, '721, '891, '900, '912, '019,
'876, '181, and '402 Patents)

INTERTRUST TECHNOLOGIES
CORPORATION, a Delaware corporation,

Plaintiff,

MICROSOFT CORPORATION, a
Washington corporation,

Defendant.

AND COUNTER ACTION.

INITIAL DISCLOSURES. '683. * 193, :86U;721. '89U '900/912,^1 9^ '402 PATENTS

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Pursuant to the Court's August 8, 2003 Order, PlaintifTlnterTrust Technologies

Corporation ("InterTrust") hereby submits its Disclosures of Asserted Claims and Preliminary

Infringement Contentions under Patent Local Rules 3-1 and 3-2 ("PLR 3-1 & 3-2 Disclosures")

to Defendant Microsoft Corporation ("Microsoft"). These PLR 3-1 & 3-2 Disclosures supercede

all previous PLR 3^1 and PLR 3-2 disclosures servexi by InterTrust in this case.

Patent Local Rule 3-1: Disclosure ofAsserted Claims and Preliminary
Infringement Contentions

(a) Asserted claims

InterTrust currently contends that the Microsoft products identified herein infringe the
claims of U.S. Patents Nos. 6,185,683 Bl ("the "683 patent"); 6,253,193 Bl ("the *193 patent");
5,920,861 ("the '861 patent"); 6,157,721 ('the '721 patent"); 5,982,891 ("the '891 patent");
5,892,900 ("the '900 patent"); 5,917,912 ("the '912 patent"); 5,915,019 ("the '019 patent");
5,949,876 ("the '876 patent"); 6; 112, 181 ("the '181 patent"); and 6,389,402 Bl ("the '402
patent"), as identified in the attached claim charts. As discovery progresses, InterTrust may
determine thai additional Microsoft products infringe the asserted patents and/or that Microsoft
infiinges additional patent claims. InterTrust reserves the right to supplement and/or amend its
disclosures and infiingement contentions.

(b) Accused products

InterTrust contends that various Microsoft products infringe the patent claims identified
in the claim charts attached hereto. Accused products are listed in Exhibit A hereto. Accused
jjroducts are listed in Exhibit A hereto, which is intended to encompass past, present, and fijture
product versions that include the accused features and/or functionality.

(c) Claim charts .

InterTrust submits the attached claim charts based solely on information available to it to
date. Discovery is ongoing, and additional information is likely to be produced during

discover}/. hiterTrusl therefore reserves the riehi to supplement and/or amend its infringement
assertions as discovery proceeds.

317954.01

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I patent initial disclosures, *683, '193. "861. *721, '891, '900.. -912, '019, •87.6. '181. and •402 PATENTS
CASE NO. C 01-1640 SBA (MEJ), CONSOLIDATED WITH C 02-0647 SBA

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InterTrust contends that Microsoft infringes at least the claims of the '683, ' 1 93, '861 ,
'721, '891, '900, '912, '019, '876, '181, ancl '402 patents identified in the claim charts attached

hereto as Exhibits B and C:'

(d) Literal infringement and the doctrine of equivalents

InterTrust contends that Microsoft infringes the claims of the '683, '193, '861, '721,
'891, *900, '912, '019, '876, '181, and '402 patents as specified in Exhibits B and C both
literally and under the doctrine of equivalents.

(e) Priority from earlier applications

InterTnist claims priority for the claims of the '891, '912. '683, '193, '019, '876, and
402 patents-in-suit dating to application No. 08/388, 1 07, filed February 1 3, 1 995,. InterTnist
:laims priority for the claims of the '900 patent-in-suit dating to application No. 08/695,927,
lied August 12, 1996. InterTrust does not claim priority for the claims of the '721^ '861, and
181 patents-in-suit dating to any earlier application.

(0 Reliance on InterTrust's own products

InterTrust does not currently intend to rely on the assertion that its own Commerce and
lights System products practice at least some of the claimed inventions of the '683, '193, '861,
721, '891, '900, '912, '019, '876, '181, and '402 patents-in-suit to support its infringement
issertions against Microsoft.

PATENT Local RULE 3-2: Document Productjon Accompanying Disclosure
(a) Documents re disclosure and/or offer of sale

hiterTmst is not currently aware of such documents other than the documents that have
,reviously been produced. SeelT00017664-19168, 1.T00020866-21695, 1T00021700-23578,

Exhibit B contains claim charts based upon publicly available or non-confidential source|.
Exhibit C contains additional claim charts referencing material designated as "Attorneys Eyes
Snly" by Microsoft, and is served under separate caption. No other information contained m
hese disclosures is designated confidential by either parly, and InterTrust does not object to
lissemination of this document, other than Exhibit C, to persons not permitted to view
^nfidential information in this case. For ease of reference, the claim charts attached hereto
nclude all claims previously disclosed by biterTrust, as well as new claims.
^jumbering/letieringAjolding has been added to the texi of each claim for convenience only, and
s not intended to alter, expand, or interpret the meaning of those claims. In mstances where
nfiingement claims are illustrated by quotation or reference to Microsoft documents, those

'ATENT initial DISCLOSURES. -683. • 193. -861. '721. -891. '900. 'g^Z.^OlP. '876 M81 arid '402 PATENTS
CASE NO. C 01-1640 SBA (MEJ). CONSOUDATED WITH C 02-0647 SBA

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IT00038608-43419.

(b) Documents re conception, reduction to practice, and/or design/development
InterTrust has produced nonprivileged documents concerning the conception, design,

develoinnent, and reduction to practice of the inventions disclosed in the patfcnts-in-suit; See,

IT00000005-17261, IT00036207-38606, IT0004 1497-549. In addition, InterTrust has
produced voluminous archives of source code created in the course of its business, some of
which may constitute additional evidence of the conception, design, development, and reduction
to practice of its patented inventions. InterTrust is not currently aware of any other such
nonprivileged documents in its possession or control other than said source code and the source
code and documents that have beai produced.

(c) Prosecution history of patentsHD-suit

The prosecution histories of the patents-in-suit have previously been produced. See.
IT00062350-67643, IT00070342-72434,FH00107455- 107731,FH0011^39-118857,

FHl 18866-121322. = \

Dated: September ^.2003 KEKER & VAN NESt Ll>

By:

MIC*I^H.PA(
Attorneys for Plaintifl/and Counter-Defendant
INTERTRUST TECHNOLOGIES
CORPORATION

references are intended to be exemplary only, and not limiting.